Sunday, June 13, 2010

The Court while dealing with an application under Order VII Rule 11 is not required to make an elaborate enquiry into debatable, doubtful or complicated questions of law or fact. What is the legal effect of the grant of patent in favour of the defendant and how far it can entitle the defendant to continue the manufacture and marking of its product and whether the said product is at all similar in design to the one patented in favour of the plaintiff respondent herein are all questions that would need to be addressed at the trial by the Court in the course of and at the conclusion of the trial. While no final opinion on those aspects need be expressed by us, the fact remains that the plaint discloses the cause of action and raises issues of fact and law of considerable importance that need to be adjudicated upon by the Court. Having said so, we may make it clear that the opinion expressed by the learned Single Judge on different aspects touching the merits of the cases set up by both the parties shall not be treated to be the expression of a final opinion on those aspects which the Court shall be free in the ultimate analysis to determine at the conclusion of the trial. Beyond that, it is neither necessary nor proper for us to say anything lest we re-judge the issues that arise for consideration in the suit or prejudice the case of one or the other party in the same. With the above observations, this appeal fails and is hereby dismissed with costs assessed at Rs.5, 000/-.

Petition u/s. 24 of CPC seeking transfer of Suit No.336/2003 petition under Section 24 of the Code of Civil Procedure, 1908 (hereinafter referred to as the 'CPC') seeking transfer of Suit No.336/2003 (Honda Giken Kogyo Kabushiki Kaisha vs. Riaz Ahmed Khan and Others) which is allegedly pending before the Additional District Judge, Delhi. As would be apparent from the facts of this case narrated below, the key question is whether there is any suit pending before the Additional District Judge, Delhi It is obvious that if there is no pending suit, the question of transfer / withdrawal of the same to this court cannot arise.
Petition dismissed.

The plaintiff to succeed the three ingredients of prima facie case, balance of convenience and irretrievable injury have to be satisfied by the plaintiff. A prima facie case is a pre-requisite for grant of interim injunction. The plaintiff had surrendered rights in terms of the family settlement dated 27.3.1997 except for a period of three years for Zone A. The three year period is long over. The plaintiff has received consideration for transferring the rights to the Anil Group. The defendant derives its rights as assignee from the Anil Group. There is, thus, no prima facie case in favour of the plaintiff. Thus, the very first ingredient required for grant of interim injunction is not present. There is, thus no question of any irretrievable injury or balance of convenience being in favour of the plaintiff.

- Suit for permanent injunction restraining infringement of trademarks and passing off – HELD "facts and circumstances show that the plaintiffs have the ownership of the aforesaid trademarks and therefore no other person has any right to use marks which are phonetically and visually similar to the plaintiffs marks as also such marks being coined words. The defendants have attempted to counterfeit the products of the plaintiffs and pass off their goods as that of the plaintiffs. The defendants have no right to use the aforementioned trade mark/s of the plaintiffs and that too in respect of same goods. This has not only caused loss of profits to the plaintiffs, but also resulted in inferior products being made available to the public at large who have been deceived by the conduct of the defendants by making the public to believe that the marks the defendants used were the valid and the incontestable marks of the plaintiffs. It cannot be lost sight of the fact that the defendants mark is such that not only would an unwary purchaser be misled and deceived into buying the wrong product but it could in turn lead to disastrous consequences, the products being pharmaceutical products thus endangering human lives.

Other aspect which arises for consideration is the issue of damages and rendition of accounts. Learned counsel for the plaintiff's contends that there are catena of judgements by this Court where the parties which do not appear or fail to contest the matter should not seek to get advantage out of their failure to produce the relevant material on record for determination of such damages. There is force in the contention of the learned counsel for the plaintiff as this aspect has been repeatedly examined by this Court in the judgement of Times Internet Limited v. Indiatmes.com & Ors., being CS (OS) No. 125/2007 pronounced on 31.7.2007. Learned counsel for the plaintiff's has substantiated his case to such damages by reference to the judgement of this Court in Asian Paints (India) Ltd. v. Balaji Paints & Chemicals & Ors., 2006 (130) DLT 150 wherein it has been observed that a party not appearing in the Court should not avail of the benefit of such absence from the Court proceedings.

Code of Civil Procedure order 39 R 1 & 2
Taking overall view of the matter, I have no hesitation in accepting the argument of the Plaintiff that the Defendants have indulged in infringement of copyright of the Plaintiff in relation to her original literary work of programme titled "Work in Progress".

Accordingly, in my view, Plaintiff is entitled to ad-interim relief also on the ground of infringement of copyright of Plaintiff's literary work in relation to programme titled "Work in Progress".

In the circumstances, ad-interim relief in terms of prayer clauses (a) and (b) of the Notice of Motion as prayed for is granted which read thus:

"a. That pending the hearing and final disposal of the suit it is absolutely just, necessary and proper that the Plaintiff is entitled to an order and injunction of this Hon'ble Court restraining the Defendants by themselves, its Directors, servants, agents and associate concerns/firms from in any manner whatsoever infringing the copyright of the Plaintiffs in the original 'literary work' being the concept note of the television programme 'Work in Progress', by directing or making or copying or reproducing the same or publishing or broadcasting or otherwise exploiting the work by making and broadcasting the television programme 'Summer Showdown', without the Plaintiff's consent so as to infringe the copyright of the Plaintiffs' in the original 'literary work' being the concept note of the television programme 'Work in Progress';

b. That pending the hearing and final disposal of the suit it is absolutely just, necessary and proper that the Plaintiff is entitled to an order and injunction of this Hon'ble Court restraining the Defendants by themselves, its Directors, servants, agents and associate concerns/firms from in any manner whatsoever breaching the confidential information imparted by the Plaintiff and contained in the concept note of the television programme 'Work in Progress', by directing or making or copying or reproducing the same or publishing or broadcasting or otherwise exploiting the work by making and broadcasting the television programme 'Summer Showdown', without the Plaintiff's consent and/or license, so as to breach the confidential information imparted by the Plaintiff and contained in the concept note of the television programme 'Work in Progress'."

Code of Civil Procedure, 1908 Rule 1 & 2
Appeals to challenge order dismissing application for ad-interim injunction restraining respondents from committing acts of infringement in respect of their trade mark "MILKA WONDER CAKE" by using trademark "MILKA" in respect of cakes - Held, As observed by the Apex Court in the judgment reported in 2002 (110) CC 518, 2002 AIR(SC) 275 ( Laxmikant V. Patel v. Chetanbhai Shah, ) . Refusal to grant injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff would not be capable of being undone at a later stage.

We do not wish to comment more about the validity of the appellant's trade mark in the present appeals as it would have a bearing on the same issue, which is stated to be pending before the Intellectual Board in the proceedings initiated by the respondents for rectification.

While considering the question of balance of convenience, the possible confusion that may cause in the mind of an ordinary person of average memory and imperfect recollection along with the possibility of difficulties and loss that may be caused to a party complaining infringement, has to be taken note of. In the case on hand, the product is cake and it will not be possible for an ordinary person to identify a particular product as both the products are found to be more or less identical. Therefore it would definitely cause confusion among the customers. The appellant has stated in so many words about the investment and the amount spent by him for sales promotion. Considering the prima facie evidence produced by the appellant and the balance of convenience, we are convinced that the appellant is entitled for an order of injunction pending disposal of the suit.

Appeal filed to challenge the order against dismissal of application for an ad interim injunction under O. 39, Rules. 1 and 2 of CPC - Application for ad interim injunction was filed for perpetual injunction restraining defendants from manufacturing or selling locks and hardware items under offending trademark "KEY MANN"
HELD
A reading of Section 28(3) WITH Section 30(1)(d) shows that the proprietor of a registered trademark cannot file an infringement action against a proprietor of an identical or a similar trademark. While Sections 28(3) and 30(1)(d) on the one hand deal with the rights of registered proprietors of identical trademarks and bar action of infringement against each other. Section 27(2) ON THE OTHER HAND DEALS WITH THE PASSING OFF ACTION. The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1)(d). Therefore, registration of a trademark under the Act would be irrelevant in an action for passing off. Registration of a trademark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark
We say so because in the absence of any statutory provision making a search essential, the practice of making a search or the breach thereof would be insufficient to support a finding that the party concerned has not come to the Court with clean hands. The learned Single Judge has also found that the plaintiff had not referred to the opposition of the defendants to the plaintiff's application for registration. That observation assumes that the opposition had been notified to the plaintiff. The material placed on record, however, does not support any such assumption. In the circumstances, the question mark put by the learned Single Judge on the bona fides of the plaintiff may remain angry area for future debate but may not be sufficient on the available material to support the vacation of the interim order.

Suit for perpetual injunction restraining defendants from infringing the Plaintiff's copyright in the literary work and cinematograph film embodying television game show "Titan Antakshari" being broadcast on its television channel "Zee" since September, 1993 inter-alia by defendants broadcasting the television game show "Antakshari .
Defendant No. 1 was employed with plaintiff under designation 'Consultant' on 23.7.1992 and from 1.4.1999 he was engaged by plaintiff under contract of service .
Held, relationship between the Plaintiff and the first Defendant from inception was one of contract of service - Plaintiff is not entitled to monopoly in concept of testing person's knowledge and memory of Hindi film music, it is manner in which contestant's knowledge and memory is tested, which accounts for novelty.
There is no magic in expression "concept note" and it would be necessary for Court in each case, to examine whether concept note constitutes work which is copyrightable and entitled to protection under provisions of the Act, concept note has not been established by Plaintiff .
Making of another film is not included under section 14(d)(i) and such other film, even though it resembles completely copyrighted film, does not fall within expression 'to make a copy of the film' and, therefore, does not amount to infringement of whole of copyright of first film - Passing off action can lie in case of reality show or in case of serial which involves spontaneous participation and interaction of 95 different participants in each episode – Petition disposed of.

Appeal filed against dismissal of Notice of Motion filed foo restraining respondents from infringing appellant's registered design of cap. Appellants were registered owners of design article called "Parachute Cap" on the other hand respondents had filed Application for registration of their's as "Cocoraj Cap" . Notice of motion was dismissed on grounds that Appellants' cap was not "an article" as defined in s. 2(a) of the Act by mainly relying on English Court's Judgment of Ford Motor Company Limited's Design Applications.
Held, that cap of packing is an article within ambit of definition of "an article" as defined in 2(1) of the Act of 2000. Definition of "article" under the Act read with definition of "design" are different from provision of English statute and words "includes any part of an article capable of being made and sold separately", whereas, in English statute words are "if that part is to be made and sold separately" - Phrase "capable of being made and sold separately" covers cases not only that article upon which design article can be made but also can be sold separately. Designed article cap is capable of being made separately and sold separately since
the Appellants/ Plaintiffs got registration under the Design Act, therefore, such owner of design article is definitely entitled to have exclusive rights to claim protection . Looking from top and surface pattern of bottle cap, even from point of view of shape and configuration and surface pattern of bottle cap, both bottles are not similar . Moreover caps do not have identical configuration and protrusions and therefore, there is no question of infringement of any registered design. Appeal disposed of.

vis-a-vis Section 27, 106, 134, 135 of Trade and Merchandise Marks Act, 1958 r/w Order 2 Rule 2 and 3 of Civil Procedure Code, 1908 -
Composite suit - Jurisdiction of court - Defendant is resident of Andhra Pradesh, the Delhi High Court had no jurisdiction - Composite suit would not entitle a court to entertain a suit in respect whereof it has no jurisdiction, territorial or otherwise - What then would be meant by a composite suit? A composite suit would not entitle a court to entertain a suit in respect whereof it has no jurisdiction, territorial or otherwise. Order II Rule 3 of the Code specifically states so and, thus, there is no reason as to why the same should be ignored. A composite suit within the provisions of the 1957 Act as considered in Dhoda House (supra), therefore, would mean the suit which is founded on infringement of a copy right and wherein the incidental power of the Court is required to be invoked. A plaintiff may seek a remedy which can otherwise be granted by the court. It was that aspect of the matter which had not been considered in Dhoda House (supra) but it never meant that two suits having different causes of actions can be clubbed together as a composite suit.

Trade Marks, Act, 1999 - ss. 29, 30(1)(b) - Applications filed for injunction alleging infringement and passing off in respect of registered trademarks GAP, Old Navy and Banana Republic in respect of apparels . Plaintiffs raising the defence that they are doing parallel import of goods under aforesaid trademarks, for which infringement has been claimed and which were manufactured much before but were no longer in use and were intended for sale in specific country.
Use of GAPL and GAPPLE trademarks by defendants were in clear violation of s. 29(5). Defendants contended that goods were meant to be sold only in the Indian market were sourced as per Agreement. Held, defendants will not use abbreviated form of GAPL though they are entitled to use full name 'Garments and Accessories Price Less' . Defendants however can use trademark GAPPLE, but not in the same writing style or the colour combination of white on blue as identified with GAP. Further local Commissioner to inspect goods. Applications disposed of.

Guidelines are being enumerated which the Court may take into consideration on the question of appointment of a Local Commissioner in software infringement and piracy matters:-

(i) The object of appointment of a Local Commissioner in software piracy matters is not, as much to collect evidence but to preserve and protect the infringing evidence. The pirated software or incriminating evidence can only be obtained from the premises of the opposite party alone and in the absence of an ex parte appointment of a Local Commissioner there is likelihood that such evidence may be lost, removed or destroyed;

(ii) Request for ex parte appointment of a Local Commissioner in such matters is usual and in fact is intended to sub serve the ends of justice as it is imperative to have an element of surprise so that the actual position is not altered;

(iii) The test of reasonable and credible information regarding the existence of pirated software or incriminating evidence should not be subjected to strict proof or the requirement to demonstrate or produce part of the pirated software/incriminating evidence at the initial stage itself. It has to be tested on the touchstone of pragmatism and the natural and normal course of conduct and practice in trade.

(iv) It may not always be possible for a plaintiff to obtain any admission by employing decoy customers and gaining access to the defendant's premises. Any such attempt also inheres in it the possibility of dis-appearance of the pirated software/incriminating evidence in case the decoy customers is exposed. Accordingly, visit by decoy customer or investigator is not to be insisted upon as pre condition. A report of private Investigator need not be dis-regarded or rejected simply because of his engagement by the plaintiff. The information provided by the private Investigator should receive objective evaluation.

(v) In cases where certain and definite information with regard to the existence of pirated software or incriminating evidence is not available or where the Court may nurture some element of doubt, it may consider asking the plaintiff to deposit cost in Court so that in case pirated software or incriminating evidence is not found then the defendant can be suitably compensated for the obtrusion in his work or privacy.

Ad interim injunction restraining the defendant from manufacturing, selling, marketing, advertising or in any manner using the trademarks 'SUPER BRIGHT', SUPER BRIGHT EL', 'SUPER BRIGHT EL-C, 'SUPER BRIGHT EL-81', 'SUPER BRIGHT HD ULTRA' and 'SUPER BRIGHT Bleach' or any other trademark which is deceptively similar or confusingly similar to that of the plaintiff.

Held that in action of passing off it has to be proved that the person to whom the goods were supplied would have been deceived into believing that the goods were that of the plaintiff when in fact they were not. Defendant supplying the rogue product , applying the plaintiffs trade mark 'SUPER BRIGHT. Fit case for likely loss of goodwill and reputation by the plaintiff if the injunction was not granted.
Plaintiffs were able to show prima facie that they are the prior users of the mark and that they have made out a prima facie case for grant of an ad interim injunction in their favour.
Injunction granted.

Section 9
Suit for banning/issuing an injunction on publication of a book, which is in existence and being published and read for last 135 years, on the ground that its publication was likely to disturb public tranquility and public order.

HELD Plaintiffs, after 135 years wanted to use it as a tool to cause damage to the society. Such kind of suits are not of civil nature and are purely of religious nature .
In such a situation the Court could not have entertained the suit for injunction dismissed.

Plaintiffs have been selling well known FORD Cars . Against this the respondent falsely claiming to be of proprietors of the mark FORD in Class-25 and using the mark FORD in respect of selling and promoting their footwear . Action brought against defendants of infringement of trademark .
Held when the plaintiffs carry on business in commercial quantities and have appointed authorised agents in Delhi, in such a factual situation Delhi High Court possessing territorial jurisdiction to entertain the Suit

Pleadings have to be taken to be a correct narration of facts . Application for rejection of plaint under CPC, dismissed.

Plaintiffs have been selling well known FORD Cars . Against thgis the respondent falsely claiming to be of proprietors of the mark FORD in Class-25 and using the mark FORD in respect of selling and promoting their footwear . Action brought against defendants of infringement of trademark .
Held when the plaintiffs carry on business in commercial quantities and have apponted authorised agents in Delhi, in such a factual situation Delhi High Court possessing territorial jurisdiction to entertain the Suit

Pleadings have to be taken to be a correct narration of facts . Application for rejection of plaint under CPC, dismissed.

(1) What shall be the standard of originality in the copy-edited judgments of the Supreme Court which is a derivative work and what would be required in a derivative work to treat it the original work of an author and thereby giving a protected right under the Copyright Act, 1957 to the author of the derivative work ? and (2) Whether the entire version of the copy-edited text of the judgments published in the appellants law report SCC would be entitled for a copyright as an original literary work, the copy-edited judgments having been claimed as a result of inextricable and inseparable admixture of the copy-editing inputs and the raw text, taken together, as a result of insertion of all SCC copy-editing inputs into the raw text, or whether the appellants would be entitled to the copyright in some of the inputs which have been put in the raw text ?
Held, judicial pronouncements of the Apex Court would be in the public domain and its reproduction or publication would not infringe the copyright . The High Court has already granted interim relief to the plaintiff- appellants by directing that though the respondent- defendants shall be entitled to sell their CD-ROMS with the text of the judgments of the Supreme Court along with their own head notes, editorial notes, if any, they should not in any way copy the head notes of the plaintiff-appellants; and that the defendant-respondents shall also not copy the footnotes and editorial notes appearing in the journal of the plaintiff-appellants. It is further directed by us that the defendant-respondents shall not use the paragraphs made by the appellants in their copy-edited version for internal references and their editor's judgment regarding the opinions expressed by the Judges by using phrases like 'concurring', 'partly dissenting', etc. on the basis of reported judgments in SCC. The judgment of the High Court is modified to the extent that in addition to the interim relief already granted by the High Court, we have granted the above-mentioned additional relief to the appellants.

Order 39 Rules 1 & 2
Plaintiffs owners of RANGOLI which is a registered trademark regarding Essence stick .
Defendant also using word RANGILI for sale of Essence stick therefore using phonetically and visually similar mark as that of registered trademark of the plaintiffs . Fit case for Interim injunction .
HELD
Thus, phonetical similarity was alleged and it has been decided by the trial court and therefore, the contention raised by the original defendants that phonetical similarity cannot be argued by the present appellants before this Court is not accepted. On the contrary, injunction ought to have been granted, looking to the mark RANGILI, which is structurally and phonetically similar to registered Trademrk of plaintiffs viz. 'RANGOLI'. Mark 'RANGILI' is deceptively similar to registered Trademark RANGOLI. A man of imperfect recollection and of average inteli will be deceived by mark used by the defendants. [Para 4]

As a cumulative effect of the aforesaid facts, reasons and judicial pronouncements, this Appeal from Order is allowed. The order dated 5th November, 2007 beh Notice of Motion exhs. 6 and 7 in Civil Suit No. 2175 of 2007 passed by the learnt Judge, City Civil Court, Court No. 6, Ahmedabad is hereby quashed and set aside. The respondents (original defendants), their servants, agents, dealers, distributor; stockists, publishers and printers are hereby restrained from using any label, materials, advertisement materials, the mark RANGILI, on and after a period of eight weeks from today. Appeal From Order is allowed. Civil Application No. of 2007 stands disposed of. [Para 5]

Section 107
Blog of Mr.J.Sai Deepak titled "SPARKS FLY AS TITANS CROSS PLUGS",
(http://spicyipindia.blogspot.com). Quoted with approval.
Doctrine of pith and marrow of the claim – Explained and applied. (Para 82.)
HELD
We have noted that the Appellant's product is a four stroke internal combustion
engine with two inlet valves and one exhaust valve which application had its own
special effects in the operation of the internal combustion of the engine or in its improvement, such an operation when supported by another valid Indian Patent No.196636 dated 25.05.2000, it will have to be necessarily held that the allegation of infringement based on the Respondent's patent No.195904 dated 16.07.2002 by itself cannot form the basis for the alleged infringement. In other words, we are convinced with the teachings of the Respondent's invention of its Patent No.195904 dated 16.07.2002 has been distinctively distinguished by the teaching of the patent No.196636 dated 25.05.2000, which supports the alleged infringed product of the Appellant and therefore the grant of injunction by the learned Single Judge cannot be sustained. (Para 80.)

When we apply the law laid down in the various decisions cited before us, as far as the validity of the patent is concerned, it is by now well settled that the validity of the patent can always be challenged in the High Court on various grounds for revocation as provided under Section 64 or the ground on which the allegation of infringement is to be established as provided under Section 104 and or could be defended under Section 107 of the Patents Act. (Para 76)
Further applying the well laid down principle that when application for revocation of a patent of the Respondent is pending before the Appellate Tribunal and when such an application has been preferred on the ground of existence of a prior art, obviousness and other formidable grounds as provided under Section 64 of the Patent's Act, the Court should not grant injunction in such cases. We hold that in the special facts and circumstances of the case, grant of interim injunction cannot be sustained. (Para 79)
As far as the application of the concept of pith and marrow of the claim, what is stated is that novel feature which is claimed to be essential would constitute the pith and marrow. If the pith and marrow of the Respondent and the Appellant are distinctively identifiable there is absolutely no scope for grant of injunction as has been done by the learned Single Judge. (Para 82.)
To be more precise, while the twin plug operation in the Respondent's internal combustion engine may have resulted in improved internal combustion, the three valve technology of the Appellant also with twin plug provision produce a distinctive product of its own, different from the claimed invention of the Respondent. (Para 84.)
We hold that the Respondent is not entitled for an injunction as applied for and the injunction granted by the learned Single Judge cannot therefore be continued. Both the appeals stand allowed.

The Trade Marks Act 1999
Section 29(4)
Reckitt & Colman Products Ltd. Vs. Borden Inc (1990) 1 WLR 491 Cited with approval. Held the principles enunciated have been incorporated in Statutes.
Rustom Ali Molla & Ors. Vs. Bata Shoe Co.Ltd. AIR 1957 Cal 120, is no longer good law.
Appeal in a suit for infringement and passing off of the trade mark SONY.
The complaint against the respondents is that they were applying the same trade mark on their
products, being hosiery goods, briefs and underwear, without the authorisation
or consent of the appellants. In connection with this suit, an application for
interim injunction was taken out by the appellants before the trial court, seeking
restraint order on use of the mark SONY by the respondents. Such prayer was
rejected. Against this order of rejection of prayer for temporary injunction by the
trial court, appeal before this Court was preferred by Sony Corporation.

Full Bench
“We agree with the views expressed by the Hon'ble Division Bench in the order out of which this reference arises”. (Para 30)

Reference by DB.
“We are saying so as we ourselves are of the view that if a person is the holder of a trade mark which has acquired a wide reputation transcending international barriers even though in respect of a specified clause or category of goods, that trade mark cannot be allowed to be violated by another person in respect of different category of goods because in our view that other person will be deliberately using the trade mark of the former with an intent to get some undue advantage because of its reputation and goodwill."
Answered in affirmative

Piracy
Held that in such cases there is no purpose in ordering accounts against
persons dealing in piracy, no accounts are kept of such sales. It has further been held that merely because the
defendants chose not to contest the suit the defendants cannot escape the liability for damages. In fact this court has also taken judicial notice of the sales at least in Delhi by such vendors. I do not find any reason to disbelieve the witness of the plaintiffs regarding damages and find the plaintiffs entitled to a decree for Rs 14 lacs.

Order 11 Rules 1 and 12
HELD "The entire case of the revision petitioner rests on the basis of their enquiry conducted in the matter which resulted in getting the alleged information about the imitations of their branded pen both in design and in shape. Therefore before granting permission to serve the interrogatories, the trial Court was expected to look into the questions for the purpose of arriving at a conclusion as to whether the revision petitioner should be compelled to disclose their nature of evidence in the suit. It is trite that a party is not entitled to serve interrogatories with a view to collect materials which would constitute the evidence of the opposite party. This provision is not a short cut for a party to win the case. The order of the trial Judge does not disclose that the basic requirements for permitting' service of interrogatories were considered in the matter.
The suit is also ripe for trial and in such circumstances, whether it was necessary to deliver the interrogatories with the questions as contained in the application in IA. No. 25 of 2002 was also not considered by the learned trial Judge. Therefore I am of the view that the entire issue need to be considered by the learned trial Judge afresh."
Impugned order set aside.

Sections 2(l)(j), 14, 15, 80 & 117A
Patent Rules, 2003
The Patents (Amendment) Rules, 2006 — Rule 24 (4)
HELD that no doubt appellant should comply with all the technical objections within first six months or any other reasonable period and resubmit the documents with all necessary amendments
Rule of
(i) audi alteram partem

"Earlier it has been held that the Controller is not a court or tribunal as per the case "Martin and Botling developments Ltd's DPD 356" and so the provisions of CPC are not applicable to him. If that be the case, the respondent could have very well relaxed the conditions of the section 80 of the Act and could have offered an opportunity of hearing to the appellant at his convenience before issuing this impugned order. Otherwise too it is very well cast on the learned Controller as an administering authority of the Patent Law, to have offered an opportunity of hearing to the applicant before taking any adverse decision on this application. In the present case, admittedly no notice was given to the appellant providing it a reasonable opportunity to defend its case. Not only that an opportunity of hearing notice was not given to the appellant, but even fresh objections were brought in the impugned order by the respondent, that have not been first communicated to the appellant so as to enable it to defend its case by presenting its views and observations. Moreover in the impugned order the respondent has categorically refused to grant the opportunity of hearing to the appellant under section 80 of the Act by taking the plea that there was inordinate delay in resubmission. The impugned order under consideration has been undisputedly made without affording an opportunity of being heard to the appellant, and that order does affect the appellant adversely."
Therefore the impugned order made without affording an opportunity of being heard Impugned order, set aside.

Application for revocation of patent . Invention titled "IMPROVED THRESHING AND SEPARATING MACHINE" It is a fact that such a knowledge is available in country for a long time, which every skilled worker in that field is, expected to know would be sufficient to invalidate a patent Concept of novelty with care has to be examined — It is not a mere mechanical application of mind or an "inevitable result" rule—Respondent specifically characterized the inventive features in his principal claim defining the scope of the invention which he sought to protect — Applicant's document does not anticipate the respondent's claim — Application for revocation, dismissed.

Return of the plaint sought on the grounds that constituted attorney is an advocate in the same case.
HELD " I am of the view that the issue of dual capacity as raised by the applicants is mere a technical irregularity, which does not affect the root cause of the issue as raised in the original suit, it would not cause any prejudice to the non-applicants if allowed to get cured. There is no legal bar to an advocate being appointed as a constituted attorney by a party for the purpose of a case. Moreover there is no suggestion of there being any mala fide."

Copyright Act, 1957, Sections 27(2) & 51
Plaintiff not residing or working for gain in Delhi — Territorial jurisdiction Invocation of jurisdiction of Court on the basis of vague allegations that the goods of defendants were being sold throughout the country including Delhi makes no sense

Order 39 Rule 3
HELD" that for passing an ex parte order the Court is required to record reasons that the object of injunction would be defeated by delay. No such reason and indeed no reason whatsoever has been recorded in the impugned order. Furthermore, we have noticed the fact that on merits also the appellant had issued a legal notice to the respondents in the year 2003, the reply to which did not state that the application for registration, filed by the respondent was in the year 1996, though it was stated in the said reply that the i user of the respondent/plaintiff was from the year 1992. In these circumstances, the veracity of the averment regarding the application of 1996 filed by the respondent/plaintiff was required to be looked into seriously before any order was passed granting an injunction which stops the business of the appellant in the disputed product."
Order of the learned Single Judge, set aside.

Plaintiff engaged in the business of manufacturing and marketing audio cassettes, video cassettes, compact disks, televisions, CD Players, fans, mineral water and various other products . Defendant illegally exploiting the sound recordings as well as the lyrics, musical compositions and music videos that are copyrights of the plaintiff . Defendants in continued breach of the plaintiffs copyrights and are seeking to unfairly gain an advantage over other Cable TV operators who have recognized the plaintiffs copyrights and have entered into valid public performance license agreements
HELD "I hereby restrain permanently all the other defendants, their officers, servants, agents and representatives and anyone acting for or on their behalf from engaging themselves or authorizing the public performance or communicating to the public or in any other way exploiting films, sound recordings and literary works (lyrics) and musical positions or other work or part thereof of the plaintiff."

Order 39 Rules 1 and 2
Plaintiff obtaining ex parte injunction by completely suppressing in the plaint that vide written agreements dated 19th August, 2002 and 20th September, 2002 (filed by the defendant No. 2 along with written statement), the plaintiff had agreed to be the authorised stockist of the defendants and the said agreements were executed on the letter-head of the defendants, which clearly mentioned the name/mark 'PRINCE Auto Industries'.
Howevre plaintiff using the distinctive trademark 'PRINCE' in respect of accessories for use in cars as registered owner. Defendant had been dealing in auto accessories and had made a mark in its field of activity well before the plaintiff got registered the trademark 'PRINCE'
Conduct of the plaintiff unbecoming of the confidence impliedly imposed by the Court in a plaintioff to state material facts.

HELD Sale figures of the defendant No.2 were nearly four times the sale figures of the plaintiff Interim orders, vacated alongwith other directions.

Section 29(4)(5) —
Suit for permanent injunction restraining infringement of trademark, passing off, damages, delivery of accounts . Plaintiff is the proprietor of the trademark SASKEN and of its logo it has world wide presence.
Defendant working under the name and style of Sasken Biotech Pvt. Ltd.
HELD "I accept the contention of the learned counsel for the plaintiff that the trademark "Sasken" is an invented word and the defendants have no jurisdiction to use the same either as a trademark or as part of their corporate name in relation to pharmaceutical goods of any kind. The defendants are thus guilty of infringement of trademarks within the meaning of Section 29(4)(5) of Trademark Act, 1999. As regards the case of passing off, it is well established law that no actual confusion and deception is necessary in order to prove the case.
Therefore relief of Rs 2 lac as punitive damages and cost of the suit awarded

Saturday, June 5, 2010

Section 29(4)(5) —
Suit for permanent injunction restraining infringement of trademark, passing off, damages, delivery of accounts . Plaintiff is the proprietor of the trademark SASKEN and of its logo it has world wide presence.
Defendant working under the name and style of Sasken Biotech Pvt. Ltd.
HELD "I accept the contention of the learned counsel for the plaintiff that the trademark "Sasken" is an invented word and the defendants have no jurisdiction to use the same either as a trademark or as part of their corporate name in relation to pharmaceutical goods of any kind. The defendants are thus guilty of infringement of trademarks within the meaning of Section 29(4)(5) of Trademark Act, 1999. As regards the case of passing off, it is well established law that no actual confusion and deception is necessary in order to prove the case.

Sunday, May 30, 2010

Section 8
It appears that the submissions made involve the interpretation of the clauses in the agreement in order to determine whether the arbitration clause covers the present dispute. This Court is persuaded to hold that prima facie clause 2.1.2 does appear to cover the expression 'musical works' contemplated under Section 2(p) CR Act. This is, however, only a prima facie view taken for the purposes of determining whether the present applications under Section 8 should be entertained and the parties to be referred to arbitration. The court is at this stage not required to express a final view on this aspect. Given the scheme of the Act and the scope of the powers of the arbitral tribunal under Section 16 it is for the arbitral tribunal to decide this question. The better course is that the parties should be referred to arbitration and all the points urged by the Plaintiff concerning the scope and ambit of the arbitration clause can be urged before the arbitral tribunal.

Order 39 Rules 1 & 2
If we go by the family settlement/arrangement, there is a primafacie, case in favour of the appellants who are plaintiffs in two civil suits, as, after 31.3.96, the respondents are not entitled to use the trade mark "Kangaro". If we go only by the Retirement Deeds, excluding the family settlement/arrangement from consideration, the respondents who are plaintiffs in one suit have a prima facie case to exclusive use of the trademark "Kangaro". Keeping in view the fact that (i) trade mark "Kangaro" was being used more or less as a family trademark till 31.3.1995; (ii) both the groups are using this trademark since prior to 7.1.1997, when status quo order was passed; (iii) No serious effort was made by the respondents for vacation of status quo order dated 7.1.1997, even after dismissal of SLP of the appellants in the proceedings arising out of CO. No. 4/97; (iv) both the groups have substantial turnover from use of the trademark "Kangaro", though turnover of the respondents is stated to be much brighter than that of the appellants, (v) In some countries the appellants are using this trade mark while in some other countries it is being used by the respondents; (vi) the court can take a final view on the nature, admissibility and applicability of the documents termed as family settlement/arrangement by the appellants and proposal/counter proposal, by the respondents, only after recording evidence, to be adduced during trial, we direct as under:
(1) During pendency of these suits, the parties shall maintain the status quo, as it existed on 7.1.1997, as regards use of the trademark "Kangaro", but, in order to ensure that there is no confusion as regards the manufacturer of the product they shall also prominently display the name of the manufacturer on the box in which the product reaches the ultimate customer.
(2) Both the groups shall maintain and file, in court, quarterly un-audited accounts of the turnover, gross profit and not profit from manufacture and sale of the products sold by them under the trademark "Kangaro", so that the group which ultimately succeeds can recover suitable damages from the other group. The accounts should be filed within 90 days of the close of each quarter. They shall also file annual audited accounts, containing the same information, by 30th June each year. The Appeals stand disposed of. The observations made in this order shall not affect or influence the decision of the suits on merit.

Code of Criminal Procedure, 1973
Section 482
Complaint— Quashing of.
The complaint which was essentially about violation of the complainant's registered design was made to appear as if the infringements were of its trademarks and copyright
HELD "The IO appears not to have considered either Section 15 (2) of the Copyright Act or the relevant provisions of the Designs Act, 2000 or the fact that the Respondent No. 2 in fact holds the registration of the design in respect of its products. Respondent No. 2 admittedly held four registrations under the Designs Act in respect of the product in question even as of that date. Under Section 15 (2) of the Copyright Act, a copyright granted in respect of a product for which a registration has been granted under the Designs Act, would cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright. There can be no manner of doubt that the product of Respondent No. 2 has been reproduced more than 50 times. Therefore, any copyright in such design would cease by operation of law. "
In the considered view of this Court, the FIR and chargesheet when examined as a whole do not even prima facie make out a case for violation of the Copyright Act 1957. In other words, the offence under Section 63 of the Copyright Act is not even prima facie attracted. FIR and all proceedings consequent thereto, quashed.

Rule 24(3)
Dispute as to certificate of search of trade mark "Bharat Marshal" — Resemblance of the two marks, which is likely to cause deception or confusion
HELD " in the present case I need not go into details and leave it open to the Registrar of Trade Marks to go into the question of resemblance and deceptive similarity as used in sub rule 1 and 3 of the Rule 24 of the Trade and Merchandise Marks Rule, 1959 as the matter is being remanded back. It is apparent that the Registrar of Trade Marks has given contradictory reports and the certificate dated 28th July, 1995 issued to the respondent No. 7 was without examining the earlier marks, which had been registered on the date when the application under TM Form No-60 was filed by the respondent No. 7 and when certificate was issued. The Registrar of Trade Marks will re-examine the matter in the light of the reports submitted by the Registrar of Trade Marks on the search carried out on the request of the petitioner. The impugned certificate dated 28th July, 1995 is accordingly quashed and set aside and the matter is remanded back to the Registrar of Trade Marks to re-examine the Form TM-60 filed by the respondent No. 7 and pass an appropriate order".

Section 92
Intellectual Property Appellate Board (Procedure) Rules, 2003 — Rule 14
Rules of procedure, it is well settled, are handmaid of justice and are normally treated as directory and not mandatory unless legislative intent is opposite. Most of the procedural rules are enacted with the object to ensure expeditious trial and do not normally impose a prohibition and bar on the power of the court/tribunal to extend time. A prohibition or bar requires a penal consequence which should flow from non-compliance of a procedural provision.
Therefore the application for taking on record additional documents should be allowed as IPAB has powers to regulate their own procedures but Rule permits and allows IPAB to extend the time for doing any act prescribed under the Rules whether such time as specified has expired or not . HELD Respondent filed six additional affidavits by way of evidence which have not been taken on record because of the delay . Further Held that one last opportunity should be granted to the petitioner and the respondent to file documents and also file affidavit by way of evidence in support of their cases . Impugned orders liable to be set aside.

Section 20(c) read as under:
"(c) the cause of action, whole or in part arises."
A bare reading of this provision leaves no room for any doubt that the present suit for injunction filed at this Court lies within its jurisdiction as the cause of action has arisen wholly or partly within the local limits of the same. No doubt, Section 20 has been codified for the purpose that the matter be tried as near as possible so that the defendant is not put to any inconvenience as regards expenses of travelling from long distances in order to defend himself. In the present case, according to the plaintiff company the suit is maintainable since a part of cause of action had accrued within the territorial jurisdiction of Delhi courts on the ground that the defendant is carrying on its business in Delhi, the defendant has issued a news article in the Delhi edition of Times of India, the defendant has a factory at Shivaji Marg, New Delhi and the defendant No. 3 who has been impleaded also resides in Delhi. It is no doubt true that the suit could have been instituted in Mumbai itself where the defendant has its registered office, but this fact however does not take away the right of the plaintiff to file its suit in this court as part of the cause of action has arisen here. In the present case it is specifically alleged by the plaintiff company that the plaintiffs rights have been violated in Delhi. Learned counsel has also argued that by means of the notice sent by defendant No. 1 the plaintiff has been threatened in Delhi, therefore, at the prima facie stage this Court is of the considered view that this court has jurisdiction to entertain the present suit.

Section 52(l)(m) — Copyrights of scripts, books, publications re-publication of the works of E.V. Ramasami (Popularly called as Periyar)
HELD

The author of Kudiyarasu, i.e. Late Periyar, was the owner and the articles published in the newspapers mostly related to the then existed economical, political, social and religious topics. Therefore, unless the author had expressly reserved his right of reproduction, no copyright will vest with anyone as reproduction of such articles cannot constitute an infringement of copyright as per Section 52(l)(m) .
Reproduction in a newspaper, magazine or other periodical . Unless the author had expressly reserved his right of reproduction, no copyright will vest with anyone as reproduction of such articles cannot constitute an infringement of copyright . Copyright in literary materials can only be an intellectual property and there has to be material to show that it was specially assigned—No written or other materials to show that a copyright reserved by author of those articles and that he also assigned it in favour of the plaintiff . Unless it is shown that they intend to reproduce pre-existing works, an order of injunction cannot be granted on the basis of apprehension and unsubstantiated allegations . Plaintiff failed to establish any ownership of the copy right in their favour and a corresponding infringement of copyright on the part of the respondents. Application for interim injunction, dismissed.

Order 39 Rules 1 & 2
Respondent/Plaintiff doing the business under the name of KHAZANA for the past 20 years whereas ppellant carrying on the business under the name of Lakshmi Gold KHAZAANA only from September, 2007 Long usage of the name KHAZAN by respondents. Therefore appellant/ defendant deceptively passing off goods namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark . Respondent already registered owners of mark rights by long usage of the word KHAZANA .
HELD Totality of the evidence placed by the respondent/plaintiff before the Court prima facie makes out a case, supporting the plea of the plaintiff that the appellant/defendant is deceptively passing off goods-namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of laintiffs/respondents registered trade mark, which actions or state of affairs if allowed to continue at this stage, will tantamount to an action for infringement of Trade Mark, especially in the circumstance, when not only the respondent has already acquired the proprietary rights by long usage of the word KHAZANA, but also when the balance of convenience is in favour of the respondent in obtaining injunction pending suit. Under such circumstances, the appeals have got to be dismissed since they do not carry any merit. [Paras 11 & 12;

Order 39 Rules 1 & 2
Respondent/Plaintiff doing the business under the name of KHAZANA for the past 20 years whereas ppellant carrying on the business under the name of Lakshmi Gold KHAZAANA only from September, 2007 Long usage of the name KHAZAN by respondents. Therefore appellant/ defendant deceptively passing off goods namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark . Respondent already registered owners of mark rights by long usage of the word KHAZANA .
HELD Totality of the evidence placed by the respondent/plaintiff before the Court prima facie makes out a case, supporting the plea of the plaintiff that the appellant/defendant is deceptively passing off goods-namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of laintiffs/respondents registered trade mark, which actions or state of affairs if allowed to continue at this stage, will tantamount to an action for infringement of Trade Mark, especially in the circumstance, when not only the respondent has already acquired the proprietary rights by long usage of the word KHAZANA, but also when the balance of convenience is in favour of the respondent in obtaining injunction pending suit. Under such circumstances, the appeals have got to be dismissed since they do not carry any merit.
[Paras 11 & 12;

Order 39 Rules 1 & 2
Respondent/Plaintiff doing the business under the name of KHAZANA for the past 20 years whereas ppellant carrying on the business under the name of Lakshmi Gold KHAZAANA only from September, 2007 Long usage of the name KHAZAN by respondents. Therefore appellant/ defendant deceptively passing off goods namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of plaintiffs/respondents registered trade mark . Respondent already registered owners of mark rights by long usage of the word KHAZANA .
HELD Totality of the evidence placed by the respondent/plaintiff before the Court prima facie makes out a case, supporting the plea of the plaintiff that the appellant/defendant is deceptively passing off goods-namely jewelleries or attempting or likely to attempt to pass off such goods as similar to that of laintiffs/respondents registered trade mark, which actions or state of affairs if allowed to continue at this stage, will tantamount to an action for infringement of Trade Mark, especially in the circumstance, when not only the respondent has already acquired the proprietary rights by long usage of the word KHAZANA, but also when the balance of convenience is in favour of the respondent in obtaining injunction pending suit. Under such circumstances, the appeals have got to be dismissed since they do not carry any merit.
[Paras 11 & 12;

Section 29 — the respondent/defendant has taken a stand that he has commenced his business with the label 'NAYA JET BRAND' on 01.2.1997 having entirely different from the quality of plaintiff such as 'NAYA JET BRAND' with different colours and figures of the figure brand represented in English, Tamil and Hindi in dark blue, orange, red and yellow colour with attachment of each figures of 'NAYA JET BRAND' colour combination and also a plea to the effect that there are lot of differences of the figures of'JET BRAND' of the plaintiff and 'NAYA JET BRAND' of the defendant in all aspects a cursory look of the appellant/plaintiffs label Ex.A. 1 and the Ex.A. 3 label of the respondent/defendant, this Court is of the considered view that the respondent/defendant has adopted the appellant/plaintiffs label Ex.A. 1 with small/minute changes in regard to the visual of flying of aeroplane and adding a word 'NAYA' before the word 'JET BRAND' in English and further there is phonetic similarity of'JET BRAND' except the word 'NAYA' and these will not alter the situation in any way in favour of respondent/defendant including the one the respondent/defendant even selling the lungies in the name of 'QUEEN JET BRAND' from 16.7.1999 with a device of aeroplane flying will not enure to his benefit and accordingly, this Court holds that the respondent/defendant with a dishonest intention has adopted the trading style label similar to that of appellant/plaintiff and has practised deception and has committed an act of passing off infringement of trade mark of the appellant/plaintiff and resultantly, the appellant/plaintiff is entitled to the relief of permanent injunction restraining the respondent/ defendant, his men, agents etc. claiming under him from using or attempting to use or enabling others to use the word NAYA JET the devise of the aeroplane or in combination thereof and (or in any other Trade Mark identical or deceptively similar or in any other manner infringing the plaintiffs Trade mark registered in Regn. No. 467004 in clause 24 in respect of Textile cloth including lungies and further that the respondent/defendant is directed to produce before the trial Court all his accounts of sales and profits from the year 1996-1997 for determining the damages/compensation payable by him to the appellant/plaintiff and in this regard, the appellant/plaintiff is directed to file necessary application by means of separate proceeding and the trial Court shall determine the same in the manner known to law and the points 1 to 4 are answered accordingly thereby perforcing this Court to interfere with the findings rendered by the trial Court and consequently allows the appeal to promote substantial cause of justice. [Para 25 & 33]

Section 29 — Deceptively similar " For a deceptive similarity, the resemblance must be such as to be likely to . deceive or cause confusion. What degree of resemblance is necessary is, from the nature of things, a matter incapable of definition a priori. Each case must depend upon on its own facts and circumstances, in the considered opinion. The risk of deceptive and confusion ought not to be fancifully and it must be a real one the decree of similarity of the two marks in sight and sound, looking not just at the registered mark as a whole but also at its salient or essential features or the idea behind it, the whole range of potential customers for the goods protected by the registered mark, and not just customers for the goods of the particular type marked by the defendant, the nature and kind of customer likely to purchase the plaintiffs' and defendants' goods; the manner in which the purchasers of the goods are generally made."
Name and style "Shri Pattathu Amman Textiles" the offending mark trade mark consistent of a device of an Aeroplane with the word Jet brand reputed in English, Tamil and Hindi in blue, red and yellow colour combination . However defendant doing the business under the name and style of 'Naya Jet Brand Lungies' Sri Periyur Amman Textiles from 16.7.1999 onwards in the name of 'QUEEN JET BRAND' therefore deceptive adoption of device of the Aeroplane.

Section 27 — Passing off. "DABUR Dashmularishta" and "DABUR Ashokarishta" Sufficient evidence of the palintiff available to prove that the plaintiff is only the proprietor and prior user of the labels are of the palintiff. Labels of the defendant are simple imitations or substantial reproductions of the plaintiffs labels therefore the profits of the defendant are the losses suffered by the plaintiff HELD that the defendant must be directed to produce its account books. Compensatory damages awarded .The ploy of defendant is that it simply picked up the label in the advertisement of the plaintiffs product and used it as their label for 'Dashmularishta' in terms of Para 21 (i), (ii and (iii) of the plaint with costs along with damages to the tune of Rs. 1 lac as against the relief of Para 21 (iv) of the plaint. The decree be drawn accordingly.

Sections 17-B & 17-D — 'JOLEN" — Permission/approval granted to respondent for manufacturing cosmetics under the Trade Mark "JOLEN"
Claim that it was spurious cosmetics HELD
The Drugs Controller has not committed any illegality in granting licence to R-2 for manufacture of cosmetics under the trade name JOLEN, merely because the said trade name stands registered in the name of the petitioner, in the light of the facts of this case, particularly when the said "registration" is of no use and not into effective operation, by force of law. This Court finds no merit on the objections of the petitioner on this issue. There is no fault in the order of R-l dated 1.12.2007. It is once again clarified that any observations made by this court on the trade mark dispute fleetingly will not be taken as any observations of this Court on that dispute. The writ petition is, however, liable to be dismissed and is dismissed as such. No order as to costs.
It is not within the-scope and powers of the Drug Controlling Authority to examine as to whether any action of infringement or passing off is taking place between two rival contenders Non-disclosure of some facts by respondents are not so material so as to call the action as fraudulent, and to wrest away the licence Madras High Court granted injunction in favour of Rival mark . Entire case of the petitioner rests on "registration" of the trade mark, but he did not initiate any action of infringement rather action initiated by the rival against the petitioner. Held that there is no illegality in granting licence for manufacture of cosmetics

Saturday, May 29, 2010

Order 17 Rule 1(2) — When the hearing of the suit has commenced, it shall be continued from day-to-day until all the witnesses in attendance have been examined, unless the Court finds that, for exceptional reasons to be recorded by it the adjournment of the hearing beyond the following day is necessary — Instead of deciding the case at the interlocutory stage, the suit itself should be disposed of finally at a very early date.
Infringement of patents — Interim order — Suit pending for long time — Suits relating to the matters of patents, trademarks and copyrights are pending for years and years and litigation is mainly fought between the parties about the temporary injunction — Matters relating to trademarks, copyrights and patents should be finally decided very expeditiously by the Trial Court instead of merely granting or refusing to grant injunction
Respondent shall be entitled to sell its product but it shall maintain an accurate records/accounts of its all India and export sales — No adjournment whatsoever ordinarily will be granted and the suit shall be finally disposed of on or before 30th November, 2009.

Validity of the assignment. Interpretation of Section 45
A bare reading of section 45 of the Trade Marks Act would show that it is not for the Registrar to adjudicate upon dispute between the assignor and the assignee. The Registrar is to register the title on receipt of the application and on proof of the title. Proof of the title is the first requirement for registration by the Registrar. Thus, the Registrar must satisfy himself, whether the document suffers from any legal infirmity with regard to its validity or formation, and also whether the assignment is invalid or violates any of the provisions of the Trade Marks Act. The Registrar may also satisfy himself whether the documents have been executed by misrepresentation or fraud. The order dated 22.2.2008 of the IPAB while examining the Deed of Assignment dated 1.4.1999 clearly records "there are no acts specified in the Deed of assignment which are required to be performed before transfer was to be completed. At least no such clauses in the assignment Deed have been brought to our attention by learned counsel for the assignor/appellant". Thus it can be said that there is no error apparent on the face of the Deed of Assignment dated 1.4.1999.
Trade Marks Act, 1999
Section 48
Trade & Merchandise Marks Act, 1958
Section 44
When there is no apparent t on the face of the Deed of Assignment and petitioner having failed to prove that any dispute was pending in any court of law relating to the cancellation or validity of the assignment Deed then when once an Assignment Deed has been executed, the assignor ceases to have any right, title or interest in the property assigned . It is not open to the assignor to cancel the assignment by means of a communication therefore no infirmity in the impugned order.
Writ petition dismissed.

Trade Mark "ketpod" of the plaintiff against defendants' mark "zetpod"
HELD it must be said that they are similar, the product to which they are applied is almost identical. Since the goods are identical it is obvious that the nature and kind of customer who would likely to buy these goods would also be similar. In this case it is necessary to apply both the visual and phonetic test. The words "ket pod" used by the plaintiff and the word "zet pod" are in my view phonetically similar. While pronouncing both, these words the assent and stress is naturally on the syllable "et". It one replace the letter "k" in word "ket pod" with letter "t", the word "tet pod" would still have pronounced use of syllable "et". I have therefore no hesitation to record my prima facie finding that the mark of the defendant is to the similar to the mark at the plaintiff. It is common ground that the plaintiff on one hand adopted and started manufacture of the products way back in 2001 and they have been selling the goods extensively throughout the country, comparatively the defendants product with the impugned mark, admittedly came to market recently in 2008.The defendants action smacks of this dishonesty.
Interim injunction made absolute.

Trademark 'TUFF' and 'TUFF LABEL'.
HELD Definition of 'trade mark' under the Act means a mark "which is capable of distinguishing the goods or services of one person from those of others Use of a mark that is not capable of distinguishing the goods of such proprietor of the trade mark would not qualify for the protection under the Act the Defendant has been unable to show that its goods bearing the mark TUFF were at any point of time since 1991 and prior to 1996 available in the market. There is absolutely no evidence placed on record by the Defendant to show that it has actually sold its goods using the mark 'TUFF' or 'TUFF & TUFF' even thereafter. For proving prior user, the Defendant repeatedly referred to the two newspaper advertisements inserted by it in 1993, the six trade enquiries between 1994 and 1995 emanating from these advertisements. Between 1993 and 1995, there were seven indents of John and John Traders and one indent of Bolt House. There is also a letter from John and John Traders asking the Defendant to send goods from outside. Then we have the grant by the Postal Department of the telegraphic address 'TUFF' to the Defendant.
Even the The partnership deeds themselves are unregistered. The deeds do not mention the impugned trade mark 'TUFF'. As set out by defendants

'Sugar Free" What it is coined word or common descriptive adjective?
HELD In our view, at this juncture i.e. at the interim stage, even assuming distinctiveness claimed by the appellant in its favor qua its artificial sweetener, the appellant has rightly been declined an injunction by the learned Single Judge since it is evident and has indeed been found by the learned Single Judge that the use of the term 'Sugar Free' by the respondent is not in the trademark sense but as a common descriptive adjective. The learned Single Judge has found and in our view rightly that the respondent has not used the expression in a trademark sense but only in a descriptive sense.... It is important to be borne in mind that use of a descriptive expression as a trade mark by a trader, irrespective of the said trade mark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products.

We are unable to hold that the appellant's trademark 'Sugar Free' is a coined word; at best it is a combination of two popular English words. The mere fact that the appellant's product cannot be directly consumed or eaten and merely is an additive does not detract from the descriptive nature of the trade mark.
Grievance adequately redressed by the restriction on the size of font by interim order held to be justified not warranting any interference.

Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark

Application of defendants for Rejection of plaint HELD adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the plaint must be taken to be correct for the purpose of adjudicating upon such an application. The remaining facts as to whether the Managing Trustee was not authorized to file the present suit on account of the fact that he had been removed as Managing Trustee by a resolution dated 22.04.2009 and as to the reasons for his removal, these are matters which have to be decided upon after evidence is adduced by both the parties. Application dismissed.
Order 39 Rules 1 & 2
Since the entire action instituted by the plaintiff-trust is on the basis that the defendants have started manufacturing and marketing various types of fans using the impugned trademark 'CINNI that already stood assigned to the plaintiff-Trust, the interim orders passed by this Court on 1st May, 2009, restraining the defendant No. 2 from interfering with the business of the plaintiff in terms of the assignment deed dated 05.11.2000 and further restraining the said defendant from transferring the impugned trademark 'CINNI that stood assigned to the plaintiff-trust by the aforesaid assignment deed in favour of any third party except the plaintiff-trust, appear to be wholly justified, and are made absolute.

Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark

Application of defendants for Rejection of plaint HELD adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the plaint must be taken to be correct for the purpose of adjudicating upon such an application. The remaining facts as to whether the Managing Trustee was not authorized to file the present suit on account of the fact that he had been removed as Managing Trustee by a resolution dated 22.04.2009 and as to the reasons for his removal, these are matters which have to be decided upon after evidence is adduced by both the parties. Application dismissed.
Order 39 Rules 1 & 2
Since the entire action instituted by the plaintiff-trust is on the basis that the defendants have started manufacturing and marketing various types of fans using the impugned trademark 'CINNI that already stood assigned to the plaintiff-Trust, the interim orders passed by this Court on 1st May, 2009, restraining the defendant No. 2 from interfering with the business of the plaintiff in terms of the assignment deed dated 05.11.2000 and further restraining the said defendant from transferring the impugned trademark 'CINNI that stood assigned to the plaintiff-trust by the aforesaid assignment deed in favour of any third party except the plaintiff-trust, appear to be wholly justified, and are made absolute.

Is acquisition of title to the trademark is dependent upon the assignment being registered ?
"A bare reading of Section 45 shows that the effect and purport of Section 45 of the Act is that the title of the assignor to the trademark accrues prima facie on the execution of the deed of assignment and on his furnishing proof of his title to the Registrar, the Registrar shall register him as the proprietor thereof. To put it differently, acquisition of title to the trademark is not dependent upon the assignment being registered, as the purpose of the registration is only to place on record the fact that title has been created and registration by itself does not create title which already stands created on the execution of the assignment deed." this Court has no hesitation in coming to the conclusion that though Section 45 (2) is couched in premptory language, the assignee, immediately on assignment, i.e. by writing acquires the rights of the registered holder. This is obviously for the reason that "assignment" has been defined in Section 2(b) of the Act to mean "the assignment in writing by act of the parties concerned". Thus, it is the act of the parties which vests title in the assignee and not the registration thereof. Registration under Section 45(1) is "on proof of title". In other words, title inheres in the assignee even before registration. Section 2(v), on the other hand, defines "registered proprietor" in relation to a trademark to mean "the person for the time being entered in the register as proprietor of the trademark". Thus, though an assignee of the trademark is vested with the title to the trademark by virtue of the assignment which is by an act of the parties concerned, in contra distinction, the "registered proprietor" of a mark is vested with title of the trademark on account of his name being entered in the register as proprietor of the trademark

Application of defendants for Rejection of plaint HELD adjudicating upon an application under Order VII Rule 11 CPC, it being settled law that the averments made in the plaint must be taken to be correct for the purpose of adjudicating upon such an application. The remaining facts as to whether the Managing Trustee was not authorized to file the present suit on account of the fact that he had been removed as Managing Trustee by a resolution dated 22.04.2009 and as to the reasons for his removal, these are matters which have to be decided upon after evidence is adduced by both the parties. Application dismissed.
Order 39 Rules 1 & 2
Since the entire action instituted by the plaintiff-trust is on the basis that the defendants have started manufacturing and marketing various types of fans using the impugned trademark 'CINNI that already stood assigned to the plaintiff-Trust, the interim orders passed by this Court on 1st May, 2009, restraining the defendant No. 2 from interfering with the business of the plaintiff in terms of the assignment deed dated 05.11.2000 and further restraining the said defendant from transferring the impugned trademark 'CINNI that stood assigned to the plaintiff-trust by the aforesaid assignment deed in favour of any third party except the plaintiff-trust, appear to be wholly justified, and are made absolute.

Section 340
It cannot also be lost sight of that in criminal prosecution there is waste of public funds and time of courts. For this reason also in every case of perjury the court would not mechanically take cognizance or direct prosecution. Prosecution should beordered only when it is considered expedient and in the interest of justice to punish the delinquent. Every incorrect or false statement does not make it incumbent on the court to order prosecution. [Para 23]
This court in Rawal Singh v. Quality Stores, AIR 1986 (Delhi) 236 in spite of finding a document having been fabricated, yet dismissed the application under Section 340 of the Cr.PC finding it not to be a fit case for recourse to any such action. In my view, the application under Section 340 of the Cr.PC at this stage if allowed would give a handle to the defendants against the plaintiff and would give unfair advantage to the defendants over plaintiff in the suit proceedings. It is still to be investigated and found out by this court as to whether the plaintiff had devised improvements I modifications over and above the drawings of CMERI and if so whether the defendants have copied I infringed the said drawings of the plaintiff. Allowing the application at this stage would tantamount to this court returning finding that the drawings of the plaintiff are the same as that of the CMERI. While the proposition in R. Karuppan (Supra) & Mahila Vinod Kumari (Supra) cannot be disputed, it cannot also be lost sight of that too frequent prosecutions for such offences tend to defeat its very object. It is only in glaring cases of falsity where conviction is highly likely that the court should direct prosecution. [Para 25]

Section 12
Honest concurrent user as to the trade mark "GEMCAL". Suit for permanent injunction, passing off and rendition of accounts on the basis of the prior user filed by appellant was dismissed.
HELD Both the parties have been selling products under the said mark for over two years prior to the notice sent by the plaintiff to the defendant in February 2003. The actual use by both parties has been thus almost concurrent except for the period of about three months for which the plaintiff was selling its product prior to sale by the defendant till the first notice was sent by the plaintiff to the defendant. As the mark has not been registered in the name of either party, the search in the trademark registry also did not yield any result in this regard. No instances of confusion between the products of the parties have been shown from any materials on the record. We had also seen the labels on the small boxes of the medicine manufactured by the appellant and respondent under the said mark which showed that they were visually distinct from each other. None of the parties were the registered owners of the trademark .
This clearly shows that the appellants were only creating a false image so as to marginalize and scuttle the functioning of a small time pharmaceutical manufacturer only on account of the fact that the appellant was a leading pharmaceutical company. Therefore, this contention of the learned counsel for the appellant that the respondent was not a bona fide concurrent user or that it had not taken the plea of concurrent user or that it was indulging in passing off of its pharmaceutical preparations in the name of pharmaceutical preparations of the appellant is not tenable in law.

Territorial Jurisdiction ingredients to exercise territorial jurisdiction indicated.
HELD The mere fact that a website is accessible in a particular place may not itself be sufficient for the courts of that place to exercise personal jurisdiction over the owners of the website. However, where the website is not merely passive but is interactive permitting the users not only to have access to the contents thereof but, also subscribe to the services provided by the owners / operators, may in certain circumstances create jurisdiction in the court of that place where the website is accessible. Where the website is interactive, the level of interactivity becomes relevant and in cases of limited interactivity such interactivity may not be sufficient for a court to exercise jurisdiction. [Para 11]
In the present case, the website www.expresspharmapulse.com containing the information of the defendant company and also information regarding the drug Tadarich is passive in nature. It has no section for subscription to its services and the options which could be exercised by subscriber. This information in no manner can be said to be inviting any subscription from anyone including the consumers. [Para 15]
It is pertinent to mention here that the defendant company has dis-continued with its product "Tadarich" and instead they are manufacturing drug Tadalafil in the brand name of Tadasip which does not include the alleged trade mark "CIALIS" owned by the plaintiff. [Para 16]
As discussed above, the website proved on the record does not indicate that the defendant invited any subscription from anyone including Delhi for supply of their product. [Para 18]
Therefore, it is concluded that the website containing the information of the defendant company and its product "Tadarich" in no manner can be said to be interactive permitting the users, not only access to the contents thereof but, also subscribe to the services provided by the defendant. Even if it is taken that a limited interactivity is there in the information, this by itself is not sufficient for this court to exercise its jurisdiction. [Para 19]

Sections 2 & 29
Dispute as to use of Trademark/trade name ROLEXby the Defendant No. 2 who is carrying on business in the name and style of 'ROLEX Jewellery House' whereas Rolex watches have acquired a status as enjoyed by the jewellery.
HELD The application of the plaintiff for interim relief restraining the defendants from dealing in artificial jewellery or in any other product bearing the trademark /trade name ROLEX or any deceptive variation thereof is allowed. Over the years and very quickly in recent times, the international boundaries are disappearing. With the advent of the internet in the last over ten years it cannot now be said that a trademark which is very well known elsewhere would not be well known here. The test of a well known trademark in Section 2(zg) is qua the segment of the public which uses such goods. In my view any one in India, into buying expensive watches, knows ofROLEX watches and ROLEX has a reputation in India. Not only so, to satisfy the needs Idemands of consumers in different countries, the well known international brands which were earlier available at prices equivalent to prices in country of origin and which owing to the exchange rate conversion were very high, have adapted to the Indian situation and lowered prices. A large number have set up manufacturing facilities here and taken out several variants. Thus, merely because today the price of a ROLEX watch may be much higher than the price of items of jewellery of the defendants as argued, cannot come in the way of the consumer still believing that the jewellery is from the house of the plaintiff. Also, there can be no ceiling to the price at which the defendants will continue to sell their jewellery. The defendants have claimed to be selling rolled gold jewellery; with the price of gold soaring, there is no certainty that the pieces of artificial jewellery of the defendants would not also be in the same range as the watches of the plaintiff. Even otherwise, the trend in modern times has been towards artificial I semi precious jewellery. In fact, the attraction to gold is confined to this part of the world only. In India also today there are several brands of artificial jewellery I semi precious jewellery whose brand value and I or prices are quite comparable to the gold jewellery of the conventional gold smiths. [Para 20]
The plaintiff has in reply to the additional affidavit of the defendant stated that jewellery and watches are allied/cognate, more so since both are items of adornment and are typically sold to customers through common trade channels of retail, etc. The affidavit on behalf of the plaintiff also cites TITAN, HARRY, WINSTON, SEIKO and CHOPARD which though originally engaged in the business of watches have ventured into jewellery or vice versa. Even otherwise, in my view watches Iclocks have ceased to be an item merely for knowing the time or a utility or a necessity. A large cross section of the population is today carrying on their person cell phones all the time. The cell phone invariably shows the time also. The need, if any, of the watch/clock for knowing the time is thus met. However, the watches continue to be marketed and sold. The reason being that over the years the watches have acquired a status as enjoyed by the jewellery. The watches are worn and clocks adorn the houses as a symbol of status. The watch / clock has metamorphosed from a simple instrument comprising of two needles I heads in a metallic case to intricate designs I shapes and which can besides on the wrist be worn as a locket, arm band and designer watches. This is quite evident from the advertising of watches and clocks. Today the stress in marketing I advertising thereof is more on its looks and ornamental value rather on its machinery. Gone are the days when before procuring a watch its longevity was enquired. Today watches are increasingly being used as a gift/novelty/ souvenir. The purpose for which jewellery is worn is being met by watches also. In fact, watches are one of the few pieces of jewellery available to the male, half of the population. In the city of Delhi also, many expensive brands of watches are sold through retail outlets of jewellers. The jewellers incorporate a watch in designs of their jewellery. [Para 21] The goods of the plaintiff may lose their sheen to the strata of the society for which they are intended if such strata finds the goods in the same brand name even though not from the house of the plaintiff being available for a much lower price. The goods of the plaintiff would then cease to be a status symbol or a fashion statement. Undoubtedly, the same would be to the detriment of the plaintiff. Having found a prima facie case in favour of the plaintiff and irreparable injury to be caused to the plaintiff by allowing the defendant to continue using the trademark, I also find the element of balance of convenience to be satisfied in the present case. The registration of the mark of the plaintiff is over 90 years prior to the claimed commencement of the use by the defendant. Even if the defendant, at the time of commencing the use, did not know of the inherent risk in adopting the well known trade mark, the defendant, at least, immediately on applying for registration and on opposition being filed by the plaintiff became aware of the perils in such use. Thus, use by the defendant of the mark is for short time only and use during the period of opposition is of no avail. The mark has got no relation to the jewellery being marketed by the defendants. Unless the defendant is deriving any advantage of the goodwill /brand value of the plaintiff and which it is not entitled to, it ought not to make any difference in the business of the defendants if the said jewellery is sold under a mark other than ROLEX. [Para 24]
With respect to arguments of the defendants of the claim being barred by time, infringement is a continuing cause of action and the defence of Limitation Act is not available. Similarly, there can be no estoppel against the statute. With respect to latches, acquiescence and waiver, such defence is available only when some positive act of encouragement is shown on the part of the plaintiff. Not only no such positive act shown in the present case but the opposition filed by the plaintiff to the application for registration of the defendant ought to have warned the plaintiff that the plaintiff is not allowing the defendant to use the mark. The case of infringement having been made out, the said pleas have no meaning. As aforesaid nothing to show any sales by defendant under the mark ROLEX, for prior to 2002 has been filed. Since then, the opposition is pending. The said period cannot be relied upon by the defendant for pleading acquiescence and waiver. [Para 25]

Copyright Act, 1957 — Section 61
Contract Act
HELD The question which arises is that should this court come to the rescue of a plaintiff whose case is steeped in such illegality. The answer necessarily has to be in negative. The present is a case where the plaintiff as well as the defendant against whom the relief has been claimed are both not entitled to the property which is of a company in litigation. The witness of the plaintiff in his affidavit by way of examination in chief also supports the said view. From his affidavit, it is not borne out and is not believable that the plaintiff at the time of entering into the agreement was not aware of the illegality of the transaction. The plaintiff as a trade person is presumed to know of proceedings for winding up having been initiated against Magnasound and it is unbelievable that the plaintiff while acquiring the copyrights of Magnasound under the agreement dated 17th June, 2004 but through the defendant No.3 was not aware of the reason therefore.

Doctrine of pari delicto potiar est conditio
" the courts will refuse to enforce an illegal agreement at the instance of a person who is himself a party to an illegality or fraud, in detail."
Suit dismissed with exemplary costs copy forwarded to Official Liquidator.
Patents Act, 1970
Section 8
A detailed chart has been produced by the Defendant, which the Plaintiff has been unable to counter, which shows the history of the processing of the application by the Plaintiff in the US Patent Office. It shows that after the filing of Form 3 in India i.e. on 21st June 2001 and prior to the date of filing of reply i.e. on 19th October 2005 there were a series of developments in the US patent application. The examination report in the US is called as an Office Action. The final Office Action was prepared on 26th July 2001 whereby claims 1 to 8 and 10 to 16 were rejected. In response thereafter on 25th September 2001, the Plaintiff carried out a preliminary amendment of the claims. On 15th January 2002 some of these claims were rejected. A response was filed thereto by the Plaintiff on 8th February 2002. There was another non-final Office Action on 2nd July 2002 where again Clauses 1, 3 to 8,10 to 15 and 17 to 22 were rejected. There was yet another final office action on 19th November 2002 after the Plaintiff had sought to respond to the rejection by the earlier Office Action. The Plaintiff also filed an appeal on 18th February 2003 while simultaneously responding to the final Office Action of 19th November 2002. There was a final Office Action on 21st December 2004. From the Examiner Report of 20th June 2005 it is apparent from the chart that there were several developments in the US Patent Office Action which obviously did have a bearing on the examination of the application by the Indian authorities. When, by the letter dated 13th September 2004 (delivered to the Plaintiff on 20th October 2004), the Controller of Patents was asking for "details regarding the search and I or examination report in respect of same or substantially same invention filed as referred to in Rule 12(3) of the Patents Rules 2003 in respect of same or substantially same inventions filed in any one of the major patent offices, such as USPTO, EPO and JPO etc." the Plaintiff obviously was required to furnish the above details. The Plaintiff itself does not deny that it did not do so. The filing of the international search report in June 2001 was not in compliance with the above requirement. [Para 44]
It is not possible to accept the submission, made by referring to the Halsburyfs Laws of England, that since the omission to furnish particulars is not serious enough to affect the grant of the patent, it did not impinge on its validity. Section 64 (1) (j) and (m) indicate to the contrary. Further under Section 43 (1) (b) a patent can be granted only when the application has been found not to be contrary to any provision of the Act. It cannot be said that the omission to comply with the requirement of Section 8 (2) was not serious enough to affect the decision of the Controller to grant the patent to the Plaintiff. The information, if provided, would have enlightened the Controller of the objections raised by the US patent office and the extent to which the Plaintiff had to limit its claims to the torus shape of the compression spring, which was a key feature of the subject device. Had the Controller been informed of the Plaintiff?s own patent No. 3932005 dated 13th January 1976, he would have been called upon to examine if that patent taught the use of a toroidal shape of a compression member and whether therefore the subject device was an inventive step within the meaning of the Act. [Para 45]
Under the amended Section 48 (1) of the Act, the patent granted shall, where the subject matter of the patent is a product, give the patentee the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India. Likewise, where the subject matter of the patent is a process, the patentee would have the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, as well as from the act of using, offering for sale, selling or importing any product obtained directly by that process in India. The change is therefore, that under the amended Section 48 a right is given to the patent holder Plaintiff, to prevent third parties from making, selling or offering for sale, the product for which such patent has been granted without the prior consent of the patent holder. The amended Section 48, however, does not in any manner change the position as regards the validity of the patent itself. It would still be vulnerable to challenge in terms of Section 13 (4) read with Sections 64 and 107 of the Act. A similar conclusion has been arrived at in Bajaj Auto Ltd. v. TVS Motor Company Ltd. (supra). [Para 48]
A plain reading of the above provision is that the patent in respect of the subject device "may be used by or on behalf of the Government for the purpose merely of its own use." This is an implied condition of the grant of patent. In the circumstances, if the government through the Ministry of Railways has itself supplied the drawings to the prospective suppliers and asked them to supply side bearing pads in conformity with those drawings, it cannot possibly be said that there is an infringement by either the Railways or its contractor of the patent. In the present case, the Plaintiff has also participated successfully in the very tender in which the Consortium of the defendants has been awarded a small percentage of the contract for supply of side bearing pads. It knew of the above stipulation and has not chosen to question it till the tender was finalised and the contract awarded. The Plaintiff, by participating in such tender, must be taken to have consented to the use of its patent by both the Railways as well as any supplier of the Railways to whom the contract for supply was to be awarded. It is also not in dispute that the Defendants have formed their Consortium only for supplying the subject device to the Railways. Although Section 156 of the Act states that patent will bind the Government, that provision has also been made "subject to the other provisions contained in this Act." A harmonious reading of Sections 47 and 156 of the Act would indicate that the object is not to involve the Government or its department or a contractor acting on its behalf in any litigation involving infringement of patent when the product or process in question is for the "own use" of the government. This is a price that the patent holder pays for getting a sizeable chunk of the contract, in this case 95%, which is virtually a monopoly. Where it is not for the governments own use, or where the Government supplies the drawings of c. patented product without the knowledge or consent of the patent holder, then Section 156 would permit enforcement and protection of the patent even against the govern ment. [Para 52]
For the above reasons, this Court is not satisfied that the Plaintiff has been able to make out a prima facie case for the continuation of the interim injunction in its favour. As will be seen hereafter, the balance of convenience at this stage also appears to be in favour of the Defendants 2, 3 and 4 for not granting an interim injunction in favour of the Plaintiff. Balance of convenience 55. The finalised tender document has been placed on record. What has been awarded to the Plaintiff is 95% of the total, quantity of the device to be supplied to the Railways. In fact Clause 7 of the "instructions" appended to the tender itself made it clear that "Item is reserved for bulk procurement for RDSO approved sources. Others can be considered for developmental order." What the Consortium has been awarded is the "developmental order" which is barely 5% of the total quantity. If the object of the Act is to ensure that the patent holder has the exclusive right to commercially exploit the patent, then that object is more or less achieved in the present tender as well, notwithstanding Section 47 of the Act. By refusing an injunction, while still imposing conditions on the Defendants 2, 3 and 4 to maintain accounts, the Court would be ensuring that in the event of the Plaintiff succeeding, it will be compensated even as regards the quantity. In the above circumstances, the balance of convenience is not in favour of grant of an interim injunction as prayed for by the Plaintiff. [Para 54]